SERVICE AND LICENSE AGREEMENT
BETWEEN
PHOTOBIT, LLC
AND
▇▇▇▇▇▇ TECHNOLOGIES, INC.
-----------------------------
This Service and License Agreement ("Agreement") is made as of the 24 day
of June, 1996 (the "Effective Date") between Photobit, LLC ("Photobit"), a
California limited liability company with its principal place of business at
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and ▇▇▇▇▇▇
Technologies, Inc. ("▇▇▇▇▇▇"), a New York corporation with its principal place
of business at ▇▇-▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇.
WHEREAS, the parties may from time to time agree in writing that Photobit
will provide certain services to ▇▇▇▇▇▇; and
WHEREAS, the parties have agreed that such services shall be provided in
accordance with the terms of this Agreement; and
WHEREAS, the California Institute of Technology ("Cal Tech"), through its
Jet Propulsion Laboratory ("JPL"), has been engaged in basic research in active
pixel sensors, conducted for the United States Government under contract
NAS7-1260 between Cal Tech and NASA; and
WHEREAS, that research led to the United States patents, patent
applications and other inventions listed in Exhibit A, which are owned by Cal
Tech, subject to certain rights of the United States Government; and
WHEREAS, Photobit entered into a License Agreement with Cal Tech dated
November 29, 1995 ("the Cal Tech Agreement"), pursuant to which Photobit is
granted a license under such patents, patent applications and other inventions;
and
WHEREAS, ▇▇▇▇▇▇ wishes to obtain from Photobit, and Photobit wishes to
grant to ▇▇▇▇▇▇, a sublicense under such patents, patent applications and other
inventions in the Field (as defined in Section 1.1) in accordance with the terms
and conditions hereof;
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NOW, THEREFORE, for and in consideration of the foregoing, of the mutual
covenants and undertakings contained herein and of other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties, intended to be legally bound, hereby agree as follows:
1. Definitions
1.1 "Field" means CMOS active pixel image sensors or image sensor chips,
including any amplifier circuits, analog-to-digital conversion circuits and
image signal output circuits integrally packaged therewith, and any casing
therefor, designed and/or used primarily for one or more of the following
purposes: (i) dental radiography, including but not limited to dental imaging,
maxiofacial imaging, intraoral imaging, intraoral x-ray imaging, panoramic
dental imaging, panoramic dental x-rays, TMJ imaging and TMJ x-rays; (ii) bone
densitometry; (iii) osteoporosis diagnostics; (iv) mammography; and (v)
orthopedics.
1.2 "Gross Invoice Amount" means:
(i) If a Licensed Product is sold, leased or otherwise distributed by
▇▇▇▇▇▇ to a third party other than a Related Company, ▇▇▇▇▇▇'▇ actual
billing or invoice amount for such Licensed Product;
(ii) If a Licensed Product is sold, leased or otherwise distributed by
▇▇▇▇▇▇ to a Related Company for subsequent distribution by or for such
Related Company other than as part of a larger product, device or system
incorporating the Licensed Product, the greater of ▇▇▇▇▇▇'▇ actual billing
or invoice amount or the Related Company's actual billing or invoice amount
for such Licensed Product;
(iii) If a Licensed Product is sold, leased or otherwise distributed
by ▇▇▇▇▇▇ to a Related Company for subsequent distribution by or for such
Related Company as part of a larger product, device or system incorporating
the Licensed Product, the greater of ▇▇▇▇▇▇'▇ actual billing or invoice
amount or a good faith apportionment of the Related Company's actual
billing or invoice amount for such larger product, device or
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system that represents the amount being charged for the Licensed Product;
or
(iv) If a Licensed Product is sold, leased or otherwise distributed by
▇▇▇▇▇▇ to a Related Company for use by such Related Company, the greater of
▇▇▇▇▇▇'▇ actual billing or invoice amount or the billing or invoice amount
that would have resulted from a hypothetical arm's-length sale by ▇▇▇▇▇▇ to
a third party if such third party were not a Related Company.
1.3 "Licensed Patent Rights" means worldwide rights to the inventions
described and claimed in the patents, patent applications and invention
disclosures listed in Exhibit A; any patents which issue on the applications or
disclosures listed in Exhibit A; reissues, reexaminations, renewals, extensions,
divisionals, continuations, and continuations-in-part of the foregoing; and any
foreign counterparts and any other forms of protection directed to the
inventions covered by the patents, applications and invention disclosures listed
in Exhibit A.
1.4 "Licensed Photobit Materials" means any reports, designs, drawings,
layouts, simulations, inventions, discoveries and other information, know-how
and work products created by Photobit in the performance of Services and
provided by Photobit to ▇▇▇▇▇▇ in connection with Services.
1.5 "Licensed Product" means any product in the Field that (i) embodies
Photobit Materials or is otherwise made, imported, used, offered for sale or
sold through the use of Photobit Materials, or (ii) is covered by, or is made by
a process covered by, any valid claim of any Licensed Patents Rights; provided
that the term "Licensed Product" does not include any personal computer,
software therefor, monitor, display, keyboard or any wire leads or like
connectors associated with such a product.
1.6 "Related Company" means any corporation or other legal entity directly
or indirectly owned or controlled by ▇▇▇▇▇▇ or its successors or assigns, or any
successor or assign of such an entity.
1.7 "Services" means professional or technical services, such as the design
of integrated circuits, that the parties may from time to time agree in writing
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that Photobit will provide in accordance with the terms of this Agreement.
2. Services
2.1 From time to time, the parties may, but shall not be obligated to,
agree in writing that Photobit will provided certain Services to ▇▇▇▇▇▇. Each
such agreement for Services shall describe the Services to be provided and the
consideration to be paid by ▇▇▇▇▇▇ to Photobit for the providing of the Services
(in addition to the royalties payable under Article 4 for certain uses of
Licensed Photobit Materials resulting from the Services). When the parties agree
that Services will be provided, the parties shall be bound by all the applicable
provisions of this Agreement except as those provisions may be modified with
respect to particular Services by a written agreement for Services.
2.2 Photobit shall own all right, title and interest in and to Licensed
Photobit Materials, including all patent, copyright, trade secret and other
proprietary rights therein. However, Photobit shall not use Licensed Photobit
Materials on behalf of, or distribute all or any part of Licensed Photobit
Materials to, any third party in connection with the design, manufacture or sale
of products in the Field. In addition, if the parties agree that Photobit will
provide ▇▇▇▇▇▇ Licensed Photobit Materials consisting of an integrated circuit
design and that ▇▇▇▇▇▇ or a third party will create photolithographic masks
therefrom, then ▇▇▇▇▇▇ or the third party shall own all right, title and
interest in and to such masks, subject to the underlying rights of Photobit in
the design. ▇▇▇▇▇▇ acknowledges that Licensed Photobit Materials contain
valuable confidential and proprietary information of Photobit and may be
protected by patent, copyright, trade secret or other law. Except as set forth
above in this Section 2.2, ▇▇▇▇▇▇ shall have only the licenses with respect to
Licensed Photobit Materials that are granted in Section 3.1. ▇▇▇▇▇▇ shall not
use, reproduce or disclose Licensed Photobit Materials except as specifically
permitted by this Agreement.
2.3 At ▇▇▇▇▇▇'▇ request, Photobit shall negotiate in good faith with ▇▇▇▇▇▇
terms pursuant to which Photobit will provide Services involving the creation of
modifications to integrated circuit designs previously created by Photobit for
▇▇▇▇▇▇. If the parties are not able to agree on such terms, then,
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subject to Article 12, ▇▇▇▇▇▇ may arrange to have such modifications provided
by an independent contractor reasonably acceptable to Photobit on terms no more
favorable to the third party than the terms ▇▇▇▇▇▇ last proposed to Photobit. In
such a case, Photobit shall provide to ▇▇▇▇▇▇ any existing layouts, schematics
and simulations for such designs that are reasonably necessary for such
independent contractor to provide such modifications. In other circumstances,
however, ▇▇▇▇▇▇ shall not create or authorize the creation of modified versions
of integrated circuit designs previously created by Photobit for ▇▇▇▇▇▇.
2.4 Photobit may provide professional or technical services, such as the
design of integrated circuits, to customers other than ▇▇▇▇▇▇, and in doing so,
Photobit's personnel may use general knowledge and experience developed in the
course of providing Services to ▇▇▇▇▇▇. However, Photobit may not use any
knowledge or experience developed in the course of providing Services to ▇▇▇▇▇▇
to provide services to any third party in connection with the design,
manufacture or sale of products in the Field.
3. Grant of Licenses and Sublicense
3.1 Subject to the terms and conditions hereof (including but not limited
to Section 2.3) and of the Cal Tech Agreement, and to the rights of Cal Tech
under the Cal Tech Agreement, Photobit hereby grants to ▇▇▇▇▇▇, and ▇▇▇▇▇▇
hereby accepts:
(i) An exclusive license under all of Photobit's right, title and
interest in and to Licensed Photobit Materials to make, have made, import,
use, offer to sell, sell and otherwise distribute Licensed Products in the
Field throughout the world;
(ii) A nonexclusive license to reproduce and prepare derivative works
of tangible Licensed Photobit Materials for ▇▇▇▇▇▇'▇ own internal business
purposes, and to distribute copies of tangible Licensed Photobit Materials
to ▇▇▇▇▇▇'▇ independent contractors solely for use for ▇▇▇▇▇▇'▇ benefit and
only pursuant to an obligation of confidentiality comparable in scope to
Article 12, and not otherwise to distribute copies of Licensed Photobit
Materials to any third party; and
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(iii) An exclusive sublicense under the Licensed Patent Rights to
make, have made, import, use, offer to sell, sell and otherwise distribute
Licensed Products in the Field throughout the world. This sublicense is
subject to: (a)*
(b) the reservation of Cal Tech's right, on the part of itself and the JPL,
to make, have made, and use products, devices and systems in the Field for
noncommercial educational and research purposes, but not for sale or other
distribution to third parties; and (c) the rights of the U.S. Government
under 35 U.S.C. Sections 2O3-2O4 and NASA Contract NAS7-1260, including but
not limited to the grant to the U.S. Government of a nonexclusive,
nontransferable, irrevocable, paid-up license to practice or have practiced
any invention conceived or first actually reduced to practice in the
performance of work under NASA Contract NAS7-1260 for or on behalf of the
U.S. Government throughout the world.
The foregoing licenses and sublicense are not transferable by ▇▇▇▇▇▇ except as
provided in Section 16.11, and ▇▇▇▇▇▇ shall not have the right to grant
sublicenses hereunder without the written consent of Photobit.
3.2. The sublicense granted in Section 3.1(iii) shall continue, unless
terminated in accordance with the provisions of this Agreement, until the last
of the patents of the Licensed Patent Rights expires. Photobit warrants that the
Cal Tech Agreement provides that if the Cal Tech Agreement is terminated by Cal
Tech, Cal Tech is obligated to accept an assignment by Photobit of any
sublicenses granted by Photobit to entities other than related companies, and
any sublicense so assigned shall remain in full force and effect. If the Cal
Tech Agreement is terminated by Cal Tech, Photobit shall
______________
* The confidential portion has been omitted pursuant to a request for
confidential treatment and the omitted material consisting of approximately 4
lines has been filed separately with the Commission.
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assign this Agreement to Cal Tech, as so contemplated by the Cal Tech Agreement.
3.3. Photobit shall not make, import, use, offer for sale, sell or
otherwise distribute CMOS active pixel image sensors and image sensor chips
within the Field and shall not affirmatively authorize or assist third parties
to do so. However, ▇▇▇▇▇▇ acknowledges that Photobit or its sublicensees other
than ▇▇▇▇▇▇ may make, import, use, offer to sell, sell and otherwise distribute
products outside the Field, such as CMOS active pixel image sensors and image
sensor chips not designed and/or used primarily for one or more of the purposes
identified in Section 1.1. Third parties acquiring such products not designed
and/or used primarily for one or more of the purposes identified in Section 1.1
may not be precluded from using, offering to sell, selling or otherwise
distributing those products for one or more of the purposes identified in
Section 1.1.
3.4. At ▇▇▇▇▇▇'▇ request, to an extent consistent with Photobit's
obligations to third parties, Photobit shall negotiate in good faith for the
licensing of the Licensed Patent Rights and Licensed Photobit Materials in
medical radiology fields other than the Field and for the licensing of patents
other than the Licensed Patent Rights that are reasonably related to the
manufacture, import, use or sale of Licensed Products and that Photobit has the
right to license to ▇▇▇▇▇▇. In other respects, ▇▇▇▇▇▇ acknowledges and agrees
that it will enjoy no priority or advantage in gaining access to any proprietary
information or intellectual property that is developed by JPL, Cal Tech or
Photobit.
3.5. All of Photobit's rights with respect to Licensed Photobit Materials
and the Licensed Patent Rights that are not explicitly granted to ▇▇▇▇▇▇ in this
Article 3 are retained by Photobit. ▇▇▇▇▇▇ shall not take any action with
respect to Licensed Photobit Materials or Licensed Patent Rights except, in each
specific instance, as permitted herein or as otherwise agreed to in writing by
Photobit.
4. Royalties
4.1. Within thirty (30) days after the Effective Date, ▇▇▇▇▇▇ shall pay
Photobit a license issue fee of five thousand dollars ($5,000).
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4.2. For each unit of Licensed Product sold or otherwise distributed by
▇▇▇▇▇▇ that (i) embodies Photobit Materials or is otherwise made, imported, used
offered for sale, sold or otherwise distributed through the use of Photobit
Materials, or (ii) is covered by, or is made by a process covered by, any valid
and enforceable claim of any Licensed Patent Rights, ▇▇▇▇▇▇ shall pay Photobit a
royalty equal to the greater of (a)* , if the sale or other
distribution is made during the three (3) year period following the first sale
or other distribution of Licensed Products having the same design as that unit,
or otherwise* , and (b)* of the Gross Invoice Amount.
4.3. If, in any one year period commencing on the first or any subsequent
anniversary of the Effective Date, ▇▇▇▇▇▇ does not pay a minimum of twenty-five
thousand dollars ($25,000) in royalties under Section 4.2, or pay an additional
royalty equal to the difference between twenty-five thousand dollars ($25,000)
and any lower amount paid under Section 4.2 within thirty (30) days after
receiving notice of such deficiency, Photobit shall have the right to terminate
this Agreement.
4.4. Notwithstanding the provisions of Section 4.2, no royalty shall be
payable to Photobit with respect to any sales to the United States Government of
Licensed Products that are covered by, or are made by a process covered by, any
valid claim of any Licensed Patent Rights, or sales made solely to permit the
United States Government to practice or have practiced or use on its behalf any
invention or process covered by Licensed Patent Rights.
4.5. All royalties and other payments payable by ▇▇▇▇▇▇ hereunder shall be
paid to Photobit in U.S. dollars. For the purpose of determining royalties
payable under this Agreement, any billing or invoice amount that ▇▇▇▇▇▇ or
Related Companies receive in currencies other than U.S. dollars shall be
converted into equivalent U.S. dollars at the average of the New York foreign
exchange selling rate for such currency during the last fifteen (15) business
days of the calendar quarter for which payment is due, as published by The Wall
Street Journal, or if such rate is not so published, at the average of the
selling rate for such currency during the last fifteen (15) business days of the
calendar quarter for which payment is due, as
_______________
* The confidential portion has been omitted pursuant to a request for
confidential treatment and the omitted material has been filed separately
with the Commission.
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published by Citibank of New York or such other bank chosen by Photobit and
reasonably acceptable to ▇▇▇▇▇▇. If ▇▇▇▇▇▇ is late in making any payment under
this Agreement, the applicable exchange rate obtained from the sources described
above shall be the greater of (i) such rate on the date on which payment was
actually made or (ii) such rate on the date on which payment was due.
5. Records, Reports and Payments
5.1. ▇▇▇▇▇▇ shall keep complete and accurate records and books of account
containing all particulars and reasonable supporting documentation concerning
all Licensed Products made, imported, used, offered for sale, sold or otherwise
distributed by ▇▇▇▇▇▇ or Related Companies under thin Agreement, the Gross
Invoice Amount for Licensed Products and the calculation of amounts payable
under this Agreement. ▇▇▇▇▇▇ shall retain such records and books for at least
three (3) years after ▇▇▇▇▇▇ pays Photobit the applicable royalties. ▇▇▇▇▇▇
shall require Related Companies to maintain such records and books as are
necessary for ▇▇▇▇▇▇ to comply with the foregoing obligations. During such three
(3) year period, within a reasonable time after receipt of notice from Photobit,
▇▇▇▇▇▇ shall allow a certified public accountant selected by Photobit and
acceptable to ▇▇▇▇▇▇ to examine during business hours, no more often than
annually, any such records and books. Photobit shall neither use nor disclose to
any third party except Cal Tech any confidential information learned through an
examination of such records and books for any purpose other than determining and
enforcing Photobit's rights under this Agreement.
5.2. On or before the last day of each February, May, August and November
for so long as royalties are payable under this Agreement, ▇▇▇▇▇▇ shall render
to Photobit a report in writing, setting forth by model the number of units of
Licensed Products manufactured and the number of units distributed during the
preceding calendar quarter by ▇▇▇▇▇▇ and Related Companies and the Gross Invoice
Amount for Licensed Products. Each such reports shall also set forth an
explanation of the calculation of the royalties payable hereunder and be
accompanied by payment of the royalties shown by said report to be due to
Photobit.
5.3. If ▇▇▇▇▇▇ fails to make any payment required under this Agreement when
due, ▇▇▇▇▇▇ shall pay interest on such amount at an annual rate equal to the
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lowest prime or base rate as published by The Wall Street Journal on or nearest
to the date on which the payment is due plus four percent (4%), which interest
shall accrue from the date the payment is due until the date such payment is
made in full. If such rate exceeds the rate allowed by applicable law, then the
highest rate allowed by law shall apply.
6. Commercialization
6.1. ▇▇▇▇▇▇ shall use all commercially reasonable efforts to (i) introduce
commercial Licensed Products in all segments of the Field as soon as practical,
(ii) regularly improve, and introduce new, commercial Licensed Products in all
segments of the Field, and (iii) market and distribute Licensed Products that
have been introduced and have not been superseded by new Licensed Products,
consistent with sound and reasonable business practices and judgments. Without
limiting the generality of the foregoing, ▇▇▇▇▇▇ shall introduce a commercial
Licensed Product in each segment of the Field identified in Exhibit B by no
later than the applicable date set forth in Exhibit B. For purposes of this
section 6.1, the exhibition of a working prototype shall constitute the
introduction of a Licensed Product into a segment of the Field, so long as
▇▇▇▇▇▇ commences actual sales or other distributions of products in that segment
of the Field within twelve (12) months after exhibition of such a prototype.
6.2. Photobit shall have the right, no more often than twice each year, to
require ▇▇▇▇▇▇ to report to Photobit in writing on its progress in introducing
commercial Licensed Products.
6.3. If ▇▇▇▇▇▇ is not fulfilling its obligations under Section 6.1 with
respect to all or any part of the Field then Photobit may so notify ▇▇▇▇▇▇ in
writing and require that, within thirty (30) days after Photobit's notice,
▇▇▇▇▇▇ present to Photobit a written plan reasonably acceptable to Photobit
pursuant to which ▇▇▇▇▇▇ would promptly commence fulfilling such obligations and
within ninety (9O) days after Photobit's acceptance of such plan overcome the
effects of ▇▇▇▇▇▇'▇ past failure to fulfill such obligations. Photobit's
acceptance of such a plan may not be unreasonably withheld. If Photobit accepts
such a plan presented by ▇▇▇▇▇▇, ▇▇▇▇▇▇ thereafter shall carry out the plan. If
▇▇▇▇▇▇ does not present Photobit with such a plan within thirty (30) days after
Photobit's notice to ▇▇▇▇▇▇, if
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Photobit reasonably withholds its acceptance of such a plan, or if ▇▇▇▇▇▇ does
not carry out a plan accepted by Photobit and thereby fulfill ▇▇▇▇▇▇'▇
obligations under Section 6.1 within ninety (90) days after Photobit's
acceptance of such plan, then, in addition to any other rights of Photobit at
law or in equity, Photobit shall have the right, at its option, either to
convert the license and sublicense granted in Sections 3.1(i) and (iii) to a
nonexclusive license and sublicense, or to terminate the license granted in
Section 3.1(i) and the sublicense granted in Section 3.1(i,ii), in any part of
the Field in which ▇▇▇▇▇▇ is not fulfilling its obligations under Section 6.1.
7. Responsibility for Licensed Patent Rights
7.1. The parties acknowledge that under the Cal Tech Agreement, Cal Tech
bears the first responsibility for applying for, prosecuting and maintaining the
Licensed Patent Rights, although Photobit has the right to review and comment
upon and approve actions undertaken in the prosecution of patents and
applications, and in some circumstances, Photobit may have the right to apply
for, prosecute or maintain certain Licensed Patent Rights in Cal Tech's name. To
the extent that Photobit is involved in applying for, prosecuting and
maintaining the Licensed Patent Rights, Photobit shall use reasonable efforts to
consult with ▇▇▇▇▇▇ concerning matters having a material effect on patent
protection in the Field for the inventions covered by the patents, applications
and invention disclosures listed in Exhibit A.
8. Infringement by Third Party
8.1. In accordance with the Cal Tech Agreement, the parties anticipate that
Cal Tech or Photobit generally will protect the Licensed Patent Rights from
infringement and prosecute infringers when, in their judgment, such action may
be reasonably necessary, proper and justified. To the extent that they do so,
control over any enforcement action, payment of expenses, and the allocation of
any recovery between Cal Tech and Photobit shall be determined in accordance
with the Cal Tech Agreement. To the extent that an infringement is in the Field,
the allocation of Photobit's portion of any recovery between Photobit and ▇▇▇▇▇▇
shall be determined in accordance with Section 8.5. To the extent that an
infringement is
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outside the Field, ▇▇▇▇▇▇ shall have no right to any part of the recovery.
8.2. If ▇▇▇▇▇▇ (i) supplies Photobit with evidence of infringement of
Licensed Patent Rights in the Field by a third party, (ii) supplies Photobit
with the written opinion of a patent attorney selected by ▇▇▇▇▇▇ who is of
recognized stature in the applicable country and who is experienced in the
applicable technical art that an enforcement action against the third party is
warranted by existing law or by a nonfrivolous argument for the extension,
modification or reversal of existing law or the establishment of new law, and
(iii) by written notice requests Photobit to take steps to enforce the Licensed
Patent Rights in the Field, then Photobit shall notify Cal Tech of such request
and consult with ▇▇▇▇▇▇ in good faith concerning enforcement of the Licensed
Patent Rights; provided that under no circumstances shall Photobit or Cal Tech
be obligated to enforce the Licensed Patent Rights against any third party. If
▇▇▇▇▇▇ does so, and within six (6) months of the receipt of such evidence and
notice, neither Cal Tech nor Photobit either (a) cause the infringement in the
Field to terminate or (b) commence a legal action against the infringer, then,
to the extent permitted under the Cal Tech Agreement, ▇▇▇▇▇▇ may, upon notice to
Photobit, commence an action against the infringer at ▇▇▇▇▇▇'▇ expense and have
sole control of the action. In addition, if ▇▇▇▇▇▇ advises Photobit of
infringement of Licensed Patent Rights in the Field by a third party, Photobit
shall consult with ▇▇▇▇▇▇ in good faith concerning enforcement of the Licensed
Patent Rights, and when permitted under the Cal Tech Agreement, Photobit may in
its discretion commence, or permit ▇▇▇▇▇▇ to commence, an action against the
infringer more rapidly than required by the foregoing procedures.
8.3. If one party commences an action to enforce the Licensed Patent
Rights, the other party shall fully cooperate with and supply all assistance
reasonably requested by the party commencing such action, including by using its
best efforts to have its employees testify when requested and to make available
relevant records, papers, information, samples, specimens, and the like. A party
commencing such an action shall bear the reasonable expenses incurred by the
other party in providing such cooperation and assistance requested pursuant to
this Section. A party commencing such an action shall keep the other party
informed of the progress of such action, and the other party sha11 be
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entitled to be represented by counsel in connection with such action at its own
expense.
8.4. If ▇▇▇▇▇▇ commences an enforcement action pursuant to Section 8.2,
▇▇▇▇▇▇ shall have the right to settle any claims, but only upon terms and
conditions that are reasonably acceptable to Cal Tech and Photobit. Should
▇▇▇▇▇▇ elect to abandon such an action other than pursuant to a settlement with
the alleged infringer that is reasonably acceptable to Cal Tech and Photobit,
▇▇▇▇▇▇ shall give timely notice to Photobit, which if it so desires, may
continue the action; provided, however, that the sharing of expenses and any
recovery in such suit shall be as agreed upon between the parties.
8.5. To the extent that Photobit commences an enforcement action against an
infringement in the Field as described in Section 8.1, or if ▇▇▇▇▇▇ commences an
enforcement action pursuant to Section 8.2, any amounts paid to such party by
third parties as the result of such an action (such as in satisfaction of a
judgment or pursuant to a settlement) shall first be applied to reimbursement of
the unreimbursed expenses (including attorneys' fees) incurred by either party
and to payment of any portion of such amounts that may be payable to Cal Tech
under the Cal Tech Agreement. Seventy-five percent (75%) of any remainder shall
be retained by Schick and twenty-five percent (25%) of any remainder shall be
retained by Photobit.
8.6. Infringement or alleged infringement of Photobit's proprietary rights
in Licensed Photobit Materials in the Field may be enforced in accordance with
the procedures specified in this Article 8 for the enforcement of Licensed
Patent Rights, to the extent that those procedures are applicable to the
particular types of proprietary rights infringed.
9. Benefits of Litigation, Expiration or Abandonment
9.1. If one or more patents or particular claims thereof within the
Licensed Patent Rights expire, or are abandoned, or are declared invalid or
unenforceable or otherwise construed by a court of last resort or by a lower
court from whose decree no appeal is taken, or certiorari is not granted with
the period allowed therefor, then the effect thereof hereunder shall be:
(i) That such patents or particular claims shall, as of the date of
expiration or
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abandonment or fina1 decision of invalidity or unenforceability as the case
may be, cease to be included within the Licensed Patent Rights for the
purpose of this Agreement; and
(ii) That such construction so placed upon the Licensed Patent Rights
by the court shall be followed from and after the date of entry of the
decision, and royalties shall thereafter be payable by ▇▇▇▇▇▇ only in
accordance with such construction.
9.2 If ▇▇▇▇▇▇ challenges the validity of Licensed Patent Rights, ▇▇▇▇▇▇ may
not cease paying royalties as of the date validity of the claims in issue are
challenged, but rather may cease paying royalties as to those claims only after
a final adjudication of invalidity of those claims.
10. Term and Termination
10.1 Unless terminated in accordance with the provisions of this Agreement,
this Agreement shall remain in effect until the last of the patents of the
Licensed Patent Rights expires and for any time thereafter that ▇▇▇▇▇▇ continues
to make, have made, import, use, offer to sell, sell or otherwise distribute
Licensed Products that embody Licensed Photobit Materials or are otherwise made,
imported, used, offered for sale, sold or otherwise distributed through the use
of Licensed Photobit Materials.
10.2 Photobit shall have the right to terminate this Agreement if ▇▇▇▇▇▇
materially breaches its obligations under this Agreement, including by failing
to make any payment as and when required by this Agreement, and ▇▇▇▇▇▇ fails to
remedy the breach within sixty (60) days after receiving notice of the breach
from Photobit. Upon any such termination, ▇▇▇▇▇▇ and Related Companies shall
have six (6) months to complete the manufacture of any Licensed Products that
then are work in progress and to sell their inventory of Licensed Products,
provided that ▇▇▇▇▇▇ pays the applicable royalties in accordance with Section
5.2 .
10.3. ▇▇▇▇▇▇ shall have the right to terminate this Agreement upon sixty
(6O) days written notice. If ▇▇▇▇▇▇ does so, it shall submit all required
reports and make all required payments in accordance with Section 5.2.
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10.4. No termination of this Agreement shall relieve ▇▇▇▇▇▇ of the
liability for payment of any royalty due for Licensed Products made prior to the
effective date of such termination.
11. Warranties and Negation
11.1. The parties each represent and warrant that they have the right,
power and authority to enter into and to perform their obligations under this
Agreement. Photobit specifically represents and warrants that:
(i) It has the right to grant the licenses and sublicense granted in
Section 3.1,
(ii) It has received no written communication asserting that a prior
knowledge, use, patent, publication, act or event renders unpatentable any
of the claims or inventions to which the Licensed Patent Rights pertain;
and
(iii) It has not entered into and will not enter into any contract or
other arrangement with any third party, including without limitation any
lien, mortgage, encumbrance, license, grant of rights, release or covenant
not to ▇▇▇, with respect to the Licensed Patent Rights or the Licensed
Photobit Materials in the Field that is in conflict with, inconsistent
with, or in derogation of the terms of this Agreement.
11.2. Nothing in this Agreement shall be construed as:
(i) A representation or warranty of Photobit as to the validity or
scope of Licensed Patent Rights or any claim thereof;
(ii) A representation or warranty that any Licensed Product is or will
be free from infringement of rights of third parties;
(iii) An obligation to bring or prosecute actions or suits against
third parties for infringement; or
(iv) Conferring by implication, estoppel or otherwise, any license or
rights under any
- 16 -
patents of Cal Tech or Photobit other than Licensed Patent Rights,
regardless of whether such other patents are dominant or subordinate to
Subject Technology.
11.3. PHOTOBIT MAKES NO EXPRESS OR IMPLIED WARRANTIES (INCLUDING THE
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE) AND
ASSUMES NO RESPONSIBILITIES WHATEVER WITH RESPECT TO SERVICES OR WITH RESPECT TO
THE MANUFACTURE, IMPORT, USE, SALE, OR OTHER DISTRIBUTION BY ▇▇▇▇▇▇ OR RELATED
COMPANIES OF LICENSED PRODUCTS.
12. Confidentiality
12.1. For the purpose of this Article 12, the term "Confidential
Information" means any material or information relating to a party's research,
development, trade secrets and business operations and affairs that the party
treats as confidential. Licensed Photobit Materials shall be deemed Confidential
Information of Photobit. The term "Receiving Party" means a party that has
access to Confidential Information of the other party (the "Disclosing Party").
12.2. A Receiving Party shall not use the Disclosing Party's Confidential
Information for any purpose other than in accordance with this Agreement and
shall not disclose Confidential Information to any person other than its
employees and its independent contractors subject to a nondisclosure obligation
comparable in scope to this Article, which employees and independent contractors
have a need to know such Confidential Information.
12.3. Notwithstanding Section 12.2, a Receiving Party may use for any
purpose or disclose any material or information that (i) is or becomes publicly
known through no fault of the Receiving Party; (ii) is developed independently
by the Receiving Party; (iii) is known by the Receiving Party when disclosed by
the Disclosing Party if the Receiving Party does not then have a duty to
maintain its confidentiality; or (iv) is rightfully obtained by the Receiving
Party from a third party not obligated to preserve its confidentiality. A
Receiving Party also may disclose Confidential Information to the extent
required by a court or other governmental authority, provided that (a) the
Receiving Party gives the Disclosing Party reasonable notice of the disclosure,
(b) the Receiving Party uses reasonable
- 17 -
efforts to resist disclosing the Confidential Information, and (c) the
Receiving Party cooperates with the Disclosing Party on request to obtain a
protective order or otherwise limit the disclosure.
12.4. The parties acknowledge that either party's breach of Section 12.2
would cause the other party irreparable injury for which it would not have an
adequate remedy at law. In the event of a breach, the non-breaching party shall
be entitled to injunctive relief in addition to any other remedies it may have
at law or in equity.
13. Indemnity
13.1. Photobit shall defend, indemnify and hold harmless ▇▇▇▇▇▇ and its
directors, officers, agents, employees and shareholders from and against all
claims, liabilities, suits, losses, damages and expenses, including costs and
reasonable attorney's fees, ("Claims") relating to or resulting from any actual
or alleged infringement of any copyright or mask work right by Licensed Photobit
Materials. ▇▇▇▇▇▇ shall notify Photobit promptly of any Claims against ▇▇▇▇▇▇
covered by the foregoing indemnity. Photobit shall have the sole right to
control and defend or settle any litigation within the scope for the indemnity,
through counsel selected by Photobit and reasonably acceptable to the
indemnified parties, except that in the case of a conflict of interest between
Photobit and an indemnified party, Photobit shall provide separate counsel for
the indemnified party, which counsel shall be selected by the indemnified party.
All indemnified parties shall cooperate to the extent necessary in the defense
of any Claims. Photobit hereby waives any rights that it may acquire by way of
subrogation by reason of any indemnification paid hereunder.
13.2. ▇▇▇▇▇▇ shall defend, indemnify and hold harmless Photobit, Cal Tech,
and their respective directors or trustees, officers, agents, employees and
shareholders from and against all Claims relating to or resulting from any
actual or alleged infringement of any patent, copyright, trade secret, or other
proprietary right other than the Licensed Patent Rights by any product, device
or system made, imported, used, sold or otherwise distributed by ▇▇▇▇▇▇ or any
Related company, except to the extent that such claims necessarily result from
infringement of any copyright or mask work right by Licensed Photobit Materials
and are subject to
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Section 13.1, and any other Claims relating to or resulting from the
manufacture, import, use, sale or other distribution of such products, devices
or systems (including but not limited to Claims for personal injury, death, or
property damage). Photobit shall notify ▇▇▇▇▇▇ promptly of any Claims against
Photobit covered by the foregoing indemnity. ▇▇▇▇▇▇ shall have the sole right to
control and defend or settle any litigation within the scope of indemnity,
through counsel selected by ▇▇▇▇▇▇ and reasonably acceptable to the indemnified
parties, except that in the case of a conflict of interest between ▇▇▇▇▇▇ and an
indemnified party, ▇▇▇▇▇▇ shall provide separate counsel for the indemnified
party, which counsel shall be selected by the indemnified party. All indemnified
parties shall cooperate to the extent necessary in the defense of any Claims.
▇▇▇▇▇▇ hereby waives any rights that it may acquire by way of subrogation by
reason of any indemnification paid hereunder.
14. Insurance
14.1. At such time as ▇▇▇▇▇▇ begins to sell or otherwise distribute
Licensed Products, ▇▇▇▇▇▇ shall at its sole expense, obtain policies of
comprehensive general liability insurance issued by insurers acceptable to
Photobit in amounts not less than one million dollars ($l,000,000) per incident
and five million dollars ($5,000,000) in annual aggregate and naming those
indemnified under Section 13.2 as additional insureds. Such insurance shall
provide (i) product liability coverage and (ii) broad form contractual liability
coverage for the indemnity of Article 13. Such insurance shall be primary
coverage without right of contribution from any Photobit insurance. Insurance
obtained by Photobit is for the exclusive benefit of Photobit and will not inure
to the benefit of ▇▇▇▇▇▇. Such insurance policies obtained by ▇▇▇▇▇▇ shall
provide that they may not be canceled or modified unless Photobit is given
thirty (30) days prior written notice by the insurer. ▇▇▇▇▇▇ shall maintain such
insurance for at least four (4) years after ▇▇▇▇▇▇ and Related Companies have
ceased commercial distribution or use of any Licensed Product.
14,2. ▇▇▇▇▇▇ shall provide Photobit with written evidence of such insurance
upon request of Photobit. ▇▇▇▇▇▇ shall provide Photobit with notice at least
thirty {30) days prior to any cancellation, non-renewal or material change in
such insurance, to the extent
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▇▇▇▇▇▇ receives advance notice of such matters from its insurer.
15. Notices
15.1. All notices sent under this Agreement shall be in writing and (i)
hand delivered; (ii) transmitted by telex, legible telecopy or cable, with a
copy sent concurrently by certified mail, return receipt request; or (iii)
delivered by prepaid overnight courier,
15.2. Notices shall be sent to the parties at the following addresses or
such other addresses as the parties subsequently may provide by written notice:
If to Photobit.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇. ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Phone: (▇▇▇)▇▇▇-▇▇▇▇
Fax: (▇▇▇)▇▇▇-▇▇▇▇
If to ▇▇▇▇▇▇:
▇▇-▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇▇▇▇▇▇
Phone: (▇▇▇)▇▇▇-▇▇▇▇
Fax: (▇▇▇)▇▇▇-▇▇▇▇
and a duplicate copy to
Fitzpatrick, Cella, ▇▇▇▇▇▇ & ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Esq.
Phone: (▇▇▇)▇▇▇-▇▇▇▇
Fax: (▇▇▇)▇▇▇-▇▇▇▇
16. Miscellaneous
16 l. Neither party shall advertise or otherwise publicize the existence of
this Agreement or the relationship between the parties without the prior written
consent of the other party.
- 20 -
16.2. ▇▇▇▇▇▇ shall not use the names of Photobit, Cal Tech or JPL in any
advertising or publicity material, or make any form of representation or
statement which would constitute an express or implied endorsement by Photobit,
Cal Tech or JPL of any Licensed Product, and ▇▇▇▇▇▇ shall not authorize any
third party to do so, without first having obtained written approval from the
appropriate entity.
16 3. Neither party shall disclose the terms and conditions of this
Agreement to any third party other than its attorneys, consultants, accountants,
auditors, shareholders and others to whom a party has a bona fide business
reason for disclosing the terms and conditions of the Agreement; provided that
each party may disclose the terms and conditions of this Agreement as may be
required by law or to enforce the provisions hereof; and further provided that
Photobit may provide a copy of this Agreement to Cal Tech.
16.4. ▇▇▇▇▇▇ shall cause all Licensed Products that are covered by, or made
by a process covered by, any valid claim of any Licensed Patent Rights to be
manufactured substantially in the United States.
16.5. ▇▇▇▇▇▇ shall cause all Licensed Products that are covered by, or made
by a process covered by, any valid claim of any Licensed Patent Rights to be
marked with appropriate notice that such Licensed Products are patented. To the
extent that Licensed Products are made, offered for sale, sold or otherwise
distributed in the United states, the form of such notice shall conform to the
requirements of 35 U.S.C., Section 287(a). ▇▇▇▇▇▇ also shall comply with any
other notice or legend requirements of applicable law.
16.6. This Agreement is subject in all respects to the laws and regulations
of the United States of America, including the Export Administration Act of
1979, as amended, and any regulations thereunder,
16.7. Nothing in this Agreement shall be construed as creating a
partnership, joint venture or agency relationship between the parties, or as
authorizing either party to act as agent for the other.
16.8. This Agreement shall be governed by and construed in accordance with
the laws of the State of California, without regard to its conflict of laws
principles.
- 21 -
16.9. The provisions of this Agreement are severable, and the
unenforceability of any provision of this Agreement shall not affect the
enforceability of the remainder of this Agreement. The parties acknowledge that
it is their intention that if any provision of this Agreement is determined by a
court or arbitrator to be unenforceable as drafted, that provision should be
construed in a manner designed to effectuate the purpose of that provision to
the greatest extent possible under applicable law,
16.10. The rights and remedies provided in this Agreement and all other
rights and remedies available to either party at law or in equity are, to the
extent permitted by law, cumulative and not exclusive of any other right or
remedy now or hereafter available at law or in equity. Neither asserting a right
nor employing a remedy shall preclude the concurrent assertion of any other
right or employment of any other remedy, nor shall the failure to assert any
right or remedy constitute a waiver of that right or remedy.
16.11. ▇▇▇▇▇▇ shall not assign any of its rights or obligations under this
Agreement to any third party without the prior written consent of Photobit,
except that without the prior written consent of Photobit, ▇▇▇▇▇▇ may assign
this Agreement to a purchaser of substantially all of the assets of ▇▇▇▇▇▇,
provided that the purchaser agrees in writing to assume all of ▇▇▇▇▇▇'▇
obligations under this Agreement.
16.12. This Agreement shall be binding upon and inure to the benefit of the
parties, their successors, permitted assigns and legal representatives.
16.13. All headings in this Agreement are included solely for convenient
reference and shall not affect the meaning or interpretation of this Agreement,
16.14. This Agreement may be executed in counterparts, each of which shall
be deemed to be original but all of which together shall constitute a single
instrument.
16.15. The provisions of Articles 5 (Records, Reports and Payment), 11
(Warranties and Negation), 12 (Confidentiality), 13 (Indemnity), 14 (insurance),
15 (Notices) and 16 (Miscellaneous) shall remain in effect after the expiration
or termination of this Agreement.
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16.16. This Agreement sets forth the complete agreement of the parties
concerning the subject matter hereof and supersedes all prior agreements between
the parties concerning the subject matter hereof. No claimed oral agreement in
respect thereto shall be considered as any part hereof.
16.17. No waiver of or change in any of the terms hereof subsequent to the
execution hereof claimed to have been made by any representative of either party
shall have any force or effect unless in writing, signed by duly authorized
representatives of the parties.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their respective duly authorized officers:
PHOTOBIT, LLC ▇▇▇▇▇▇ TECHNOLOGIES, INC.
By:/s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ By:/s/ ▇▇▇▇▇ ▇▇▇▇▇▇
--------------------------- -------------------------
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ Name: ▇▇▇▇▇ ▇▇▇▇▇▇
------------------------ ------------------------
Title: CEO Tite: President
------------------------ ------------------------
Date: June 24, 1996 Date: 6/24/96
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